McLaren Health Care Corporation v. MacLaren Group
Claim Number: FA1212001476390
Complainant is McLaren Health Care Corporation (“Complainant”), represented by Steven L. Permut of Reising Ethington P.C., Michigan, USA. Respondent is MacLaren Group (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue is <maclarenhealth.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2012; the National Arbitration Forum received payment on December 18, 2012.
On December 18, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <maclarenhealth.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@maclarenhealth.com. Also on December 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 7, 2013.
On January 14, 2013, the Forum received a Joint Request to Stay proceedings for 45 days signed by both Complainant and Respondent. On January 15, 2013, the Forum granted the 45 day stay. Complainant filed a unilateral Request to Remove the Stay on February 28, 2013. The Forum approved this request and granted the Order to Lift Stay on February 28, 2013.
On February 28, 2013, Complainant submitted a timely and compliant Additional Submission to this proceeding.
Respondent submitted an Additional Submission to this proceeding on March 5, 2013. The Forum determined this to be a timely and compliant submission on March 6, 2013.
On March 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant McLaren Health Care Corporation (“Complainant”) seeks transfer of the domain name <maclarenhealth.com> from the MacLaren Group (“Respondent”). Complainant contends it has rights in the McLAREN mark dating back to 1951, these rights are currently registered by way of United States Patent & Trademark Office (“USPTO”) registrations (See 4,334,362 registered on Oct. 16, 2012, with a filing date Sept. 7, 2011). Complainant uses the McLAREN mark in connection with the provision of health care services. Respondent’s <maclarenhealth.com> domain name is substantially identical to Complainant’s McLAREN mark. The phrase “maclaren” is a misspelling of Complainant’s McLAREN mark. The term “health” is merely a descriptive term that has no ability of changing the domain name’s commercial impression. Likewise, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant. Complainant further contends Respondent is not commonly known as the <maclarenhealth.com> domain name because the WHOIS information lists “MacLaren Group” as the registrant of the name. Because “MacLaren Group” is not the same as <maclarenhealth.com> domain name, Respondent cannot possess rights in the domain name. The fact that MacLaren is part of Respondent’s name does not give Respondent unfettered rights and legitimate interests in such a domain name. Respondent’s domain name is not being used in connection with a bona fide offering of goods or services, nor is the domain name providing a legitimate noncommercial or fair use. Respondent is using the domain name to divert Internet users to advertising portals leading to competing goods and services. Respondent is typosquatting. Typosquatting is not a legitimate use of the domain name because it merely takes advantage of Internet user’s mistake in typing the McLAREN mark. Respondent has agreed to offer this domain name for sale. The domain name’s resolving website directs Internet users to a website that allows the user to place a bid on the domain name. Respondent is intentionally attracting commercial gains through the confusion of Internet users. Respondent is using the domain name to promote sponsored links to an array of health and medical insurance services. Internet users will mistakenly believe that Complainant is the source of this content.
B. Respondent
Respondent indicates in its initial Response that it consents to transfer the <maclarenhealth.com> domain name to Complainant in its Response.
Respondent further contends the domain name is owned by Brian MacLaren, owner of MacLaren Health, and is in no way associated with MacLaren Group. Respondent admits there is some confusion, and notes that he picked the name “MacLaren Group” in registering the domain name because he thought this information would be private. Respondent asserts that “MacLaren Group” is the mailing address of the “MacLaren Health” group, a company dedicated to the support of dialysis patients via the formation of support groups. McLaren Health is engaged in activities with the Kidney Foundation of Canada, Ontario Renal Network, and the Canadian Patient Council. Respondent’s domain name is not a misspelling of McLaren, as his last name and the name of his company is MacLaren.
C. Additional Submissions
Complainant’s additional submissions:
Complainant contends Respondent does not have rights to operate a confusingly similar click-through hyperlink website simply because his last name is “MacLaren.” Respondent has failed to rebut the prima facie case against his lack of rights and legitimate interests. Respondent may use the name “MacLaren Health” in conjunction with assisting dialysis patients, but the <maclarenhealth.com> domain name is being used for no purpose other than to promote click-through hyperlinks. These hyperlinks are not supporting or promoting Respondent’s alleged business, but simply redirect Internet users to competing websites. Respondent has provided no argument or reason as to why the domain name should still resolve to an undeveloped website dedicated to the hosting of hyperlinks. Respondent failed to correct WHOIS information to show that his organization is called “MacLaren Health.” Respondent has failed to rebut the fact that he is using the domain name exclusively in a bad faith attempt to divert Internet users through competing click-through links.
Respondent’s Additional Submissions:
Respondent states that to this date he has not built any website in conjunction with the <maclarenhealth.com> domain name. Respondent notes that losing this domain name would cause him to lose his business e-mail address. Respondent agrees that the WHOIS information is incorrect as it was registered when he was uncertain if his brother’s MacLaren Group would join in his endeavors. Respondent requests the Forum to recognize that he has only recently recovered from his health ailments, and is trying his best to grow his business.
Respondent consents to transfer the <maclarenhealth.com> domain name to Complainant, and as such, the Panel foregoes the traditional UDRP Analaysis.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Consent to Transfer
Respondent, in its initial response to the Complaint, consented to transfer the <maclarenhealth.com> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC., placed a hold on Respondent’s account and therefore Respondent could not transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has agreed to transfer the domain name in question to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the <maclarenhealth.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Respondent admits repeatedly that it has not used the domain name in the course of any of its business and has no intention to use the domain name for a website business. Respondent has indicated that the only use of the domain name is his email address, xxx@maclarenhealth.com, that he uses for business. The Panel has no authority to provide any order other than to address the transfer of the domain name. However, in light of Respondent’s consent to transfer, and other circumstances described, it would not be inappropriate for Complainant to voluntarily make arrangements to permit Respondent to use the email address xxx@maclarenhealth.com, for a short period, up to six months, so Respondent can make arrangements to transfer his business email.
Having consented to transfer under the transfer requested by Complainant, the Panel concludes that relief shall be GRANTED, and the domain name <maclarenhealth.com> be transferred to Complainant.
David P. Miranda, Esq., Panelist
Dated: March 25, 2013
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